40 F. 383 -

40 F1d 383

Case Text

'1'HOMPsbNtI. E. 1'. DONN1I!LL MANUF'a

co.

883

Co.

'rRomON'

dol.". E. P.

DONNELLMANUF'G

(Cwm.ut COll.£rt, N. D. nz.mO'll. October 11, 1889.)
1I'JmnAL Co"cmTS-CoHITY., The cirCuit court of the United States for the northern district of DIlnols will, nnder the rule. of comity, be governed, as·to the infringement of a patent, by prior decisiollS of other circuits, as to the same patent, where the proof is the .

}JWDqm'T, J. In this, suit complainant charges the infringement of UnitedStates)etterspatent No. 136,340, granted February 25,1873, to Arza:8. Keith, assignee of Samuel W, for ,an "improvementin :J;Ilachines fOf formiqg staple seams in leather.» ·In his specifications the inyentor,llBoySJ II The invention relates to an organization of mechanism for uniting leather work by means of staples. or the formation of staple scams j ..'II... The machine being designed to cut the wire into staple·forming lengths, to form and drive the staples, to twist' together' the- driven and protrUded points of each, to cut off the excess of metal at the point. and to feed the work for in· sertion of successive staples in the formation of a continuous seam." ,'Whetberthis machine successfully fortning seams hi leather by means of does not clearly appear by the proof. The only use to which it has been applied, so far as the disclosures in this record go, is for stapling or stitching printedpamphlpts together; be considered only as a new use of the machine not con· templated by. the inventor at the time of his specifications, but clearly protected With, the use to which the inventor proposed to apply it. ,The defenses setup are: 'Want of novelty, and non-infringement. This patent has been before the United States circuit court of the south· em district of New York on several occasions, and fully considered and adjudicated upon. The only controversy in this case,as in the prior case I have mentioned, is as to.the charge of the infringement of the third claim of the patent, which is: '·"IfiCoIlll>inat!on Witb'the bender-foot, q, and driver, m, the inclined and , ' retreating anvil, n, operating SUbstantially as described." .... In Thompsdn v. Gildersleeve,34 Fed. Rep. 43, the was charged with the infringement ofthis claim; and the validity of the claim, and the infringement of the patent by the defendant, were fully sustained: for the inclined and After the decision that case, defendl,lnt retreating support of the legs Of the staple, While being driven, whafis briefs a, isa rectan.; gplar, inclined, support of the legs of the so arranged, forced into the paoo: llB.toretreat from within the staple. as it is ,This modified form. o(cOnstruction.wasbqfore the

Equity.

884

.FEPERAL REPORTER,

vol. 40.

same court in Thompson v. American Bank Note Co., on an application for an injunctioa-pendente lite; and the question as to the evasion of this claim of the patent by this modification was considered, and held against the defendant, and injunction awarded. 85. Fed. Rep. 203. The same case has since been brought to final hearing before that court, and a dereqdered, finding that the machine, as modified, still infringes the third claim of the patent. 89 Fed. Rep. 274. It also appears that the defendant, as the manufacturer of the machines in question in the Gildersleeve and American Bank Note Co. Cases, assumed and conducted the defense, and that the same proof which is now in the record in this Case was put in and considered in both of these prior cases. Hence, waiving all question as to whether defendant is estopped in this case by these prior decisions, I have no doubt that under the rule of comity, which I have always attempted to apply in cases of this character, this court should be governed by the decisions on the same patent in prior cases, where the proof is the ·same. A decree may therefore be entered in this case finding that the third claim of complainants'patent is valid, and that the defendant infrinp;es the same, and referring the case to a master to ascertain and report the damages.

When complainant allowl the time fixed by rule of court fqr setting down exceptions :Illed to an answer for scandal, impertinence, and insufficiency to pass by. and the court, after examining the exceptions, is of opinion that the cause will be more speedily determined by a withdrawal of the exceptions, the time will not be enlarged, though good cause be shown, but complainant Will be allowed to withdraw the exceptions, and reply to the answer.

In Equity. On exceptions to answer. Robert Ludlow Fowler, for complainant. Webb Tillman, for defendant Schley.
PARDEE, J. In this cause, defendant James W. Schley filed an 8118Wer in which he reiterated certain matters before pleaded by him in a certain plea which. had been overruled by the court. To this answer complainants filed exceptions on the 3d day of June, 1889, in time under the rules, as follows:
II (1) For that the said defendant hath answered to the btu, 81 matter of defense, the same identical matter heretofore introduced by said defendant; in his. pleas to the bill in this suit; which.pleas. being brought to a hearing, have been bad, and overruled for inSUfficiency. Therefore, having due reference to the said pleas. and the order and decree thereon, the ant excepts to the follOWing part of said answer asinsutJicienti that 18 to